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Latest News: 04-15-2013 (Newsletter Issue 5/13)
New TM Law in VG Expected
The publication of the Proclamation in the Government Gazette to implement the new Trade Marks Act, 2013 is expected. This will repeal the Trade Marks Act (Cap. 158) and the Registration of United Kingdom Trade Marks Act (Cap. 157).

Once the new Act is effective, the existing ‘dual’ registration system, which provides for the filing of either independent or UK-based applications, will be replaced by a single system for filing independent registrations.

In brief, the following changes are expected:
- Provision for the registration of service marks
- Provision for the registration of collective and certification marks
- Adoption of the Nice Classification (10th Edition)
- Revision of the renewal term from 14 to 10 years

Source: Spoor & Fisher, South Africa


04-15-2013 (Newsletter Issue 5/13)
Consultation for Fast Track Opposition Procedure
The Intellectual Property Office (IPO) has today launched a public consultation on the introduction of

1) an opposition ‘fast track’ procedure within the Trade Mark Tribunal, and
2) a refundable appeal fee for inter partes appeals to the Appointed Person

The consultation seeks views on the appropriate procedural changes and closes on 17 May 2013.

Through the fast track procedure business can oppose the registration of new trade marks if the mark appears to be the same as, or too similar to their own existing mark.

The fast track seeks to improve access to opposition proceedings by reducing the cost, complexity and increasing the speed at which business can protect their trade mark rights.

For more information, please click here

Source: www.ipo.gov.uk



04-02-2013 (Newsletter Issue 4/13)
Time Periods/Opposition Periods Changed
The United Kingdom Intellectual Property Office (UKIPO) announced that the Trade Marks and Registered Designs (Amendment) Rules 2013 and The Trade Marks (International Registration) (Amendment) Order 2013 came into force on 31 March 2013.

In terms of the amendment to the opposition period, this applies to any period that was still open on or after 31 March 2013. This means that for any UK trade mark application or UK designation of an IR that is published on 1 February 2013 or afterwards, the opposition period lasts for 2 months gross (ie: a trade mark application published on 1 February is be open to third party opposition until 1 April 2013 - instead of 31 March 2013 under the old regime).

For further information, please click here

Source: Squire Sanders (UK) LLP, UK


04-02-2013 (Newsletter Issue 4/13)
Online Services Enhanced
On 2 April 2013, the IPO implements enhancements to its online trade mark services. This includes improvements to the online trade mark application, online trade mark renewals, e-correspondence, and the trade marks journal.

Full details can be viewed here

Source: Squire Sanders (UK) LLP, UK


02-18-2013 (Newsletter Issue 2/13)
Changes to Trademark Services Soon Active
The United Kingdom Intellectual Property Office (UKIPO) announced that their new IT system for processing trademarks is going to be implemented in February 2013. The new system will increase the processing efficiencies and introduce some customer enhancements. Changes are to be implemented in two phases, with approximately a 6 week gap between the phases.

For further information and full details, please click here

Source: www.ipo.gov.uk


02-18-2013 (Newsletter Issue 2/13)
Protection for Person's Personality in Guernsey
On 3 December 2012 new legislation came into force in Guernsey allowing the protection of ‘personality’ and ‘image’ rights as new forms of intellectual property.

Any natural persons (alive or dead within the last 100 years), legal persons, joint or group personalities and even fictional characters can have their ‘personality’ registered and any photos, moving images, names, signatures, appearances, expressions, voices, likenesses, gestures or mannerisms can also qualify for protection via association or registration as ‘images’.

Source: www.ipo.guernseyregistry.com and Schillings, Uk


11-19-2012 (Newsletter Issue 17/12)
New Trade Mark Law in Montserrat
The implementing Regulations for the Trademarks Act (Cap15:23) 2002 came into effect in Montserrat on 1 November 2012.

Under the new Act, the ‘dual’ registration system which provides for the filing of either independent or UK-based applications remains in place. The changes primarily affect independent applications (bringing them into line with UK-based applications). Some of the changes are:

- Provision for the registration of service marks
- Provision for the registration of collective, certification and series marks
- Adoption of the Nice Classification (10th Edition) (replacing the old British Classification of 50 classes)
- Provision for the recordal of licences
- Revision of the renewal term from 14 to 10 years
- General increase in the official fees

Source: Spoor & Fisher, South Africa/Channel Islands


10-16-2012 (Newsletter Issue 15/12)
New Requirements for Merging TMs
In 2010, the UK IPO launched a public consultation which proposed changes to laws governing the merging of trademarks. As a result of this consultation, new requirements for the merging of trademarks have now come into force.

With effect from October 1, 2012, any request for a merger must now meet the following requirements:
- The trademarks must have the same filing date.
- The trademarks must be registered.
- None of the trademarks intended for merger is subject to cancellation proceedings.
- None of the trademarks intended for merger is the base for an international registration still within the 5 year dependency period.

The new form TM17 is available since October 1, 2012 and can be accessed here. The old form TM17 will be rejected by the IPO after December 31, 2012.

For more information of the merger changes please click here

Source: www.ipo.gov.uk


09-27-2012 (Newsletter Issue 14/12)
New Trademark Act in Grenada Introduced
The Trademarks Act of 2012 has now come into effect and replaces the Registration of United Kingdom Trade Marks Act Cap 284 of 1939. Under the new Act the UK-based system has been abolished, and there is only provision for independent registration.

Under the transitional provisions existing UK-based registrations shall continue to have effect as if registered under the new Act.

Source: Spoor & Fisher, British Isles


07-30-2012 (Newsletter Issue 12/12)
Changes to Trademark Services
The United Kingdom Intellectual Property Office (UKIPO) is implementing a new IT system for processing trademarks in order to increase its processing efficiencies and introduce some customer enhancements including more user friendly access to information and web services. Changes are to be implemented in two phases, with approximately a 6 week gap between the phases.

Phase 1
- Notice of Threatened Opposition: New layout e-form TM7A which should be used for filing notices of threatened opposition.
- Notice of Opposition and Statement of Grounds: New layout of form TM7 and available in PDF fillable format.
- New Style Journal: International UK designations and UK applications will be integrated and published in one Journal. The Journal numbering will change (to reflect week and year).
- New Style Examination Report: For International UK designations, taking into account feedback from customers.

Phase 2
- 'Ecaveats' Changes to 'eAlerts': eAlerts has enhanced features allowing customers to monitor the progress or status of a trade mark by requesting alerts for specific events all FREE of charge. This service is also available for International Registrations designating the UK.
- Trade Mark e-Renewal: A new ‘e’ trade mark service for fast, efficient online renewal and payment, using form, eTM11. The service provides timely email receipt acknowledgements, with the Certificate of Renewal emailed as a PDF attachment once payment has cleared.
- Trade Mark e-Application: Some of the changes include i.e. a more user friendly language and better examples to aid customer completion as well as a goods and services classification search tool located within the application process.

For further information and full details, please click here

Source: www.ipo.gov.uk


05-29-2012 (Newsletter Issue 9/12)
Ratification of Singapore Treaty
United Kingdom of Great Britain and Northern Ireland ratified to the Singapore Treaty on March 21, 2012.
In conformity with Article 28(3), the said Treaty will enter into force on June 21, 2012.

Source: www.wipo.int


05-02-2012 (Newsletter Issue 7/12)
New Practice in Trademark Proceedings
The United Kingdom Intellectual Property Office (UKIPO) has issued a new Tribunal Practice Notice (TPN) relating to the submission of survey and expert witness evidence in UKIPO trade mark proceedings:

This practice notice gives notice that survey evidence and expert witness evidence can only be adduced into trade mark proceedings before the Intellectual Property Office with the permission of the hearing officer. It sets out the criteria which will need to be satisfied for such evidence to be adduced and the nature of that evidence.

The new TPN will be in force on July 16,2012.

For more information, please click here

Source: www.ipo.gov.uk


04-17-2012 (Newsletter Issue 6/12)
Change of Address of UKIPO
The Intellectual Property Office London will be located at a new address as of May 21, 2012.

Normal business will be unaffected but any filing of documents after 11.59 p.m., May 20, 2012 should be at the new address:
1st Floor
4 Abbey Orchard Street
London, SW1P 2HT

There will be no change to the telephone numbers for the office.

Source: www.ipo.gov.uk


02-21-2012 (Newsletter Issue 3/12)
Requirement for Local Agent in Cayman Islands Postponed
Although the new Patents and Trade Marks Law, 2011, came into force on December 7, 2011, the Government has now passed the Patents and Trade Marks (Transitional Provision) Regulations which provide that the date for implementation of the requirement to use a local registered agent will be postponed until March 31, 2012.

The Registry will cease to accept instructions from overseas agents or proprietors of patents and trade marks on April 1, 2012. Please see newsletter issue 1/12 for more information on the new law.

The reason for this short postponement is that the regulations which make provision for the application process for registered agents, namely the Patents and Trade Marks Regulations, 2012, (“the Regulations”) were just recently passed on February 3, 2012, some time after the implementation of the Law.

Source: Appleby Intellectual Property, UK


01-23-2012 (Newsletter Issue 1/12)
New Patents and TM Law in Cayman Islands
The new Patents and Trade Marks Law 2011 took effect in the Cayman Islands on December 7, 2011.

Following amendments can be reported:
- A registered agent is now required: Proprietors of patents and trade marks can now only transact business with the Registry of Patents and Trade Marks in the Cayman Islands via a registered agent who must be resident in the Cayman Islands.
- Certificates of Good Standing will now be available: The new legislation provides that the Registry, upon request by a registered agent, may issue a certificate of good standing to evidence that a patent or trade mark has been recorded in the Cayman Islands and that all applicable fees have been paid.
- Annual fees and penalty fees: The new legislation provides that if the annual fee is not paid by March 31 of the relevant year, the right protected will be held in abeyance from April 1 until the annual fee and penalty fee is paid. A penalty is payable when the annual fee is paid after March 31. It should also be noted that in the event that an annual fee and the applicable penalty fee is not paid for more than twelve months, the patent or trade mark in question may be cancelled by the Registrar.
- Renewal of expired patents or trade marks: Proprietors should also be aware that whilst their registered agent may apply for an expired patent or trade mark to be renewed, a renewal application which is made more than two months after expiry will attract a late renewal fee in addition to the renewal fee and any outstanding annual and penalty fees.
- Abandoned patents or trade marks: The proprietors shall inform the Registry, via their registered agent, if a patent or trade mark has been abandoned when the Registry will record the protected right as inactive. Upon payment of a re-activation fee and annual fees the protected right may be revived.

To access the new law, please click here. For further information please also check the article of Mr. Moses from Appleby Intellectual Property here

Source: Appleby Intellectual Property, UK

Further information on Cayman Islands see below (Related Territories).


10-25-2011 (Newsletter Issue 12/11)
Requirement to Attend Hearings on Invalidation on Relative Grounds
The UK Intellectual Property Office (UKIPO) issued Tribunal Practice Notice (3/2011) which updated TPN (6/2009) concerning the requirement to attend hearings in relation to applications for invalidation on relative grounds.
The registrar does not consider that a mandatory hearing in every such invalidation case is necessary or even beneficial. The registrar will, accordingly, review each invalidation action based on relative grounds, and either direct attendance at a hearing under rule 62(2), or alternatively, suggest instead that a decision be taken from the papers only. In the latter case, the parties will nevertheless retain their right to be heard if they wish.

For more information please click here


10-25-2011 (Newsletter Issue 12/11)
Report on Trade Mark Incentives
The UK Intellectual Property Office (UKIPO) has commissioned the report 'Trade Mark Incentives'. It investigates the relationship between trade marking and business performance in terms of productivity, employment, wages and growth.

According to this study, positive linkages were found between trade marking and business performance, which ”indicate[s] that trade mark active firms are different in important and valuable ways from other firms. This should reassure policymakers, who design innovation policy to encourage domestic producers to compete on product quality and variety, not just cost and price, and to use trade marks to signal their innovations.”

To access the full report please click here


08-12-2011 (Newsletter Issue 10/11)
End of Reclassifications
The UK Intellectual Property Office (UKIPO) will cease reclassification of trademark registrations effective October 31st, 2011.

The Registrar offered proprietors with UK domestic registrations in Class 42 the opportunity to reclassify the services affected by the restructuring of the Nice Classification. In some cases this required a new class (or classes) to be added to the registration.
The benefits of reclassifying the UK domestic registrations are questionable as Community Trade Marks and International Registrations (designating the UK) are not being reclassified.

Therefore, the UKIPO stops to reclassify trademark registrations. Up to (and including) this date, any owner of a trade mark registration who wishes to have their registration considered for reclassification may contacting the UKIPO. For more information please click here

Source: Marks & Clerk LLP, United Kingdom


03-28-2011 (Newsletter Issue 5/11)
Manual of Trademarks Practice Updated
The United Kingdom Intellectual Property Office has updated the documents New applications and The Examination Guide: publication and registration.

For more information please click here


10-01-2010 (Newsletter Issue 15/10)
Opposition Period Reduced by One Day
The UK Intellectual Property Office (UKIPO) has published a new Tribunal Practice Notice 4/2010 which effects the calculation of the oppostion period. The opposition deadlines for UK national trademark applications, the UK designations of trademark applications under the Madrid Protocol and the deadlines to extend the opposition period have been reduced by one day.

This new practice entered into effect on September 30th, 2010.

For more information please click here


05-20-2010 (Newsletter Issue 11/10)
Administrative Trademark Fees Increased
The United Kingdom Intellectual Property Office increased the administrative fees for recording assignments, licences and security interests, effective April 6th, 2010.

For more information please click here


02-15-2010 (Newsletter Issue 7/10)
Trademark Invalidation Proceedings Changed
The UK Intellectual Property Office (IPO) has its handling of trademark invalidation proceedings. The Hearing Officer’s decision will no longer be made on paper. The parties or their legal representatives will be required to attend a full hearing before any decision is made. This is the position only where the challenge to the trademark is made on relative grounds. The IPO’s new approach will likely increase costs for brand owners bringing or defending invalidation proceedings.

For more information please click here


Source: Hammonds LLP, London, UK

01-27-2010 (Newsletter Issue 6/10)
Cayman Islands: Increase of Official Fees
From January 1st, 2010 the application fees for extension of trademark rights to the Cayman Islands based on a prior UK registration has been increased from KYD 150.00 to KYD 200.00 (from EUR 132.00 to approx. EUR 176.00).

The annual fee to maintain the trademark registration increased from KYD 100.00 to KYD 200.00 (from EUR 88.00 to approx. EUR 176.00) for one class. Each additional class costs now KYD 100.00 (approx. EUR 88.00).


Legal basis is the Trade Marks Act of 1994.
A registration provides protection for the trademark in the United Kingdom of Great Britain and Northern Ireland and automatically extends to the British Indian Ocean Territory, the Falkland Islands, and the Isle of Man. On the Bahamas, subject to local prior rights, the owner of a UK trademark is entitled to registration upon production of a UK registration certificate.
Trademark protection is available in the following countries through extension of an existing UK mark: Cayman Islands, Gambia, Jersey, Kiribati, Saint Helena, Solomon Islands, Tuvalu. In Grenada, a new trademark Act was introduced in 2012, which abolishes the UK-based system. Under the transitional provisions however, existing UK-based registrations shall continue to have effect as if registered under the new Act.
In addition to local registration, it is also possible to apply for registration based on a UK trademark in the following countries: Anguilla, Antigua and Barbuda, Bermuda, Dominica, Fiji, Gibraltar, Guernsey, Guyana, Montserrat, Saint Kitts and Nevis, Saint Lucia, Sierra Leone, Virgin Islands and Western Samoa.
The UK is a member of the Madrid Protocol and the European Union.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
The UK is a “common law“ jurisdiction, i. e. official and juridical decisions on the Trade Marks Act of 1994 are rendered on the basis of prior decisions and judgements on similar cases.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, colours, colour combinations, the three-dimensional form of a good or its packaging as well as sound marks, olfactory marks and any combination of the mentioned signs.
The following trademark types are registrable: trademarks, service marks, collective marks, certification marks.
The application is filed at the UK Intellectual Property Office. Multiple class applications are possible.
Foreign applicants do not need a local agent. A postal address within the UK is required. A power of attorney is not necessary.
Foreign applicants do not need a domestic registration.
The application process includes an examination on absolute grounds and a search for prior trade marks. Signs not deemed distinctive can be accepted for publication if distinctiveness has been acquired by use.
The processing time from first filing to registration is approx. 6 to 9 months. The first office action is taken after approx. 4 to 6 weeks.
Before registration, the application is published in the weekly “Trademarks Journal” for opposition purposes. The trademark will then proceed to registration, unless other reasons prevent the registration.
National:
The deadline for filing an opposition period is 2 months from publication date of a trademark application in the Trade Marks Journal on or after 31 March 2013. This means that for any UK trade mark application that is published on 1 February 2013 or afterwards, the opposition period lasts for 2 months gross (ie: a trade mark application published on 1 February will be open to third party opposition until 1 April 2013 - instead of 31 March 2013 under the old regime).

Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
2 months
Upon registration, protection backdates to the day of application. A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
If the trademark has not been used within 5 continuous years following registration it may be subject to cancellation. Subsequent use of the trademark can restore protection if no party has requested its revocation due to non-use in the meantime.
The official fee is GBP 200.00 (approx. EUR 230.00) for one class and GBP 50.00 (approx. EUR 57.00) for each additional class. From October 1st, 2009, applications made through the online application form (e-TM3), which include the full payment at the time of filing, will qualify for a discount of GBP 30.00 (approx. EUR 34.00 ) off the total cost.
Trademark Licence Agreement
A licence to use a trademark may be granted orally, but the terms of such licences may be difficult to prove. Licensors should grant licences in writing. Exclusive licences must be in writing to be legally effective. Licensing of unregistered marks is permitted. A licence to use a registered trademark may be general or limited to some of the goods and/or services covered by the trademark registration or to the use of the mark in a particular manner or a particular locality. This should be done to ensure that the licensor maintains control of the quality of the goods and/or services supplied to the public using the trademark. A failure to do so may lead to the loss of the trademark. Sub-licences may be granted by the licensee. The sale of a registered mark does not automatically terminate the licence agreement. Unless the licence provides otherwise, it is binding on a successor in title to the grantor’s interest. There are no statutory provisions which require specific terms to be incorporated into a licence agreement.

Recordal
The grant of a licence under a registered trademark is a registrable transaction. It is not mandatory that it is recorded on the Register of Trade Marks but it will affect the licensee’s right to take action if it is not recorded. It is recommended to record the licence promptly, after the rights have been acquired. If the licence is not registered a person claiming to be a licensee by virtue of the transaction does not have the protection of the Trademark Act. If an application to register the licence is not made to the United Kingdom Intellectual Property Office within six months of the date of the licence, and the mark is infringed before the licence is registered, the court will not award the licensee its legal costs unless it is satisfied that it was not practicable to have made such an application for recordal before the end of that period, and that an application was made as soon as practicable thereafter. Such circumstances are likely to be rare. Accordingly, it appears that registration of a licence is not mandatory before raising action but it can have an impact on costs recovery.

There is no prescribed form or content for a licence agreement, although it has to be in writing and signed by the licensor to be recorded. The recordal is published in the weekly UK Trade Marks Journal. The licence agreement itself is not published but a third party can request a copy of the licence if it has been submitted to the Intellectual Property Office. It is possible to keep certain documents or parts thereof confidential. It is not necessary to file a copy
of a licence agreement if the person signing the form is authorised to do so on behalf of both parties.

Effectiveness
Trademark licences usually become effective on the date of the licence, unless the agreement provides otherwise.

Infringement Proceedings
There is an evidentiary presumption that use by a recorded licensee is permitted use. A registered user may call upon the trademark owner to institute infringement proceedings. If the owner refuses or neglects to institute infringement proceedings, the registered user may institute proceedings in his own name after a period of two months. A proprietor of a registered trademark who is joined as a defendant shall not be liable for costs in the action unless he takes part in the proceedings.
Search type First class Add. class
Word Mark Search (availability) 220,00 € 50,00 € 
Word Mark Search (identical) 60,00 € 20,00 € 

The Prices above are S.M.D. Markeur Search Fees
Anguilla (AI)
Anguilla is a British Overseas Territory with its own trademark statute. Anguilla, which was linked with Saint Kitts and Nevis years ago, has its own Patents and Trademarks Registry separate from any other jurisdiction. In addition to local registration, application can be made for registration based upon an existing United Kingdom (UK) trademark. Such applications can be made at any time during the life of the UK trademark and will expire concurrently with the UK trademark. On the other hand, Community Trademarks and International Registrations designating the UK cannot be re-registered in Anguilla. Paris Convention priority is available in Anguilla.

Bermuda (BM)
Bermuda is a British Overseas Territory with its own trademark statute. Marks registered in the United Kingdom (UK) cannot be used as the basis for an application in Bermuda but can be used as evidence in support of a claim of distinctiveness. Paris Convention priority is not available in Bermuda.

British Indian Ocean Territory (IO)
The British Indian Ocean Territory is a British Overseas Territory with no own trademark law. The territory is not inhabited, except for scientific research teams and military personnel. United Kingdom (UK) registrations automatically provide protection. Community Trademarks and International Registrations designating the United Kingdom are not valid in the British Indian Ocean Territory.

British Virgin Islands (VG)
British Virgin Islands are a British Overseas Territory with its own trademark statute. In addition to local registration, application can be made for registration based upon an existing United Kingdom (UK) trademark. Such applications can be made at any time during the life of the UK trademark and will expire concurrently with the UK trademark. On the other hand, Community Trademarks and International Registrations designating the UK cannot be re-registered in British Virgin Islands. Local registrations are within the old British Classification system of 1938 and service marks cannot be registered except by way of re-registering a service mark that has already been registered in the UK. Paris Convention priority is not available in British Virgin Islands.

Cayman Islands (KY)
Cayman Islands are a British Overseas Territory with its own trademark statute. The Patents and Trade Marks Law provides only for the registration of trademarks previously registered in the United Kingdom (UK), or as a Community Trademark, or as an International Registration with extension of rights to a European Union jurisdiction. Application may be made at any time during the life of the base registration and the resulting period of validity is identical to that of the underlying base registration. Since all applications in Cayman Islands must be based upon an existing registration, Paris Convention priority is not available. All trademarks registered in Cayman Islands must be maintained annually with payment of a fee due on January 1st of each year; a penalty applies to late payment.

Falkland Islands (FK)
The Falkland Islands are a British Overseas Territory with its own trademark law. It no longer includes its former dependencies South Georgia and the South Sandwich Islands. However, Falkland Islands legislation allows for the extension of United Kingdom (UK) trademark rights without re-registration. These then expire concurrently with the UK trademark. Extension of a Community Trademark is automatic in the Falkland Islands if the mark is also registered in the UK. This protection is based on national law and not on European Union law. International Registrations designating the UK also have effect in the Falkland Islands. The period of opposition against International Registrations designating the UK is 2 months minus 1 day from the date of national publication.

Gibraltar (GI)
Gibraltar is an independent member within the British Commonwealth. United Kingdom (UK) national rights can extend but only when separately applied for at the Gibraltar Registry. Applications can be made at any time during the life of the UK trademark and will expire concurrently with the UK trademark. Community Trademarks and International Registrations designating the European Union (EU) automatically extend to Gibraltar. The period of opposition against International Registrations designating the EU is 3 months, commencing 6 months after the OHIM publication date.

Guernsey (GG)
Guernsey is a Crown dependency with its own trademark law. Trademarks registered in Guernsey receive protection within the jurisdiction for 10 years, renewable for like periods. In addition to local registration, the registered owner of a United Kingdom (UK) registered trademark, or a person deriving a right from the registered owner, may apply for registration based on the UK trademark. Applications can be made at any time during the life of the UK trademark and will expire concurrently with the UK trademark. Community Trademarks do not have effect in Guernsey. Individuals or companies who do not have either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Community must be represented before the Trademark Office in all proceedings with the exception of filing applications for Community Trademarks. Since Guernsey is not part of the European Union (EU), an applicant has to be represented before the office. International Registrations designating the UK do not cover Guernsey.

Isle of Man (IM)
Isle of Man is a self-governing Crown dependency of the United Kingdom (UK). It is part of the British Isles, but neither a part of Great Britain nor of the United Kingdom. It has no own trademark law. UK law is extended to the Isle of Man. UK trademarks are automatically valid in the Isle of Man. Although the Isle of Man is not part of the European Union, Community Trademarks are recognised and protected without re-registration. UK membership of the Madrid Protocol extends to the Isle of Man. The period of opposition against International Registrations designating the UK is 2 months minus 1 day from the date of national publication.

Jersey (JE)
Jersey is a self-governing Crown Dependency of the United Kingdom (UK) with its own legislative assembly, legal system and administration, including intellectual property laws. The owner of a UK registered mark may apply for registration based on the UK trademark. Applications can be made at any time during the life of the UK trademark and will expire concurrently with the UK trademark. New trademark legislation was introduced in October 2000 to extend protection to Community Trademarks (without re-registration) and International Registrations. Amendments to the Community Trademarks regulations in 2004 now allow for Community Trademarks applications from Jersey to be accepted by OHIM. International Registrations designating the UK also extended to Jersey. The period of opposition against International Registrations designating the UK is 2 months minus one day from the date of national publication.

Montserrat (MS)
Montserrat is a British Overseas Territory with its own trademark statute. In addition to local registration, application can be made for registration based upon an existing United Kingdom (UK) trademark. Such applications can be made at any time during the life of the UK trademark and will expire concurrently with the UK trademark. On the other hand, Community Trademarks and International Registrations designating the UK cannot be re-registered in Montserrat. Local registrations are within the old British Classification system of 1938 and service marks cannot be registered except by way of re-registering a service mark that has already been registered in the UK. Paris Convention priority is not available in Montserrat.

Pitcairn Islands (PN)
The Pitcairn Islands are a self-governing British Overseas Territory without its own trademark law. No further information is available. Community Trademarks and International Registrations designating the United Kingdom (UK) are not valid in the Pitcairn Islands.

Saint Helena (SH)
Saint Helena is a British Overseas Territory without its own trademark law. Only the owner of a United Kingdom (UK) registered trademark may apply for registration based on a UK trademark. Applications can be made at any time during the life of the UK trademark and will expire concurrently with the UK trademark. Community Trademarks and International Registrations designating the UK do not have effect in Saint Helena.

South Georgia and the South Sandwich Islands (GS)
South Georgia and South Sandwich Islands are a British Overseas Dependent Territory, formerly dependencies of the Falkland Islands. The territory is not inhabited, except for scientific research teams and military personnel. There is no intellectual property rights legislation applicable in this territory. United Kingdom (UK) trademarks do not extend to South Georgia and the South Sandwich Islands. Community Trademarks are not valid in South Georgia and the South Sandwich Islands. International Registrations designating the United Kingdom do not extend to South Georgia and the South Sandwich Islands.

Turks and Caicos Islands (TC)
Turks and Caicos Islands are a British Overseas Territory with its own trademark statute. In addition to local registration, application can be made for registration based upon an existing United Kingdom (UK) trademark. Such applications can be made at any time during the life of the UK trademark and will expire concurrently with the UK trademark. On the other hand, Community Trademarks and International Registrations designating the UK cannot be re-registered in Turks and Caicos Islands. Paris Convention priority is available in Turks and Caicos Islands. All trademarks registered in Turks and Caicos Islands must be maintained annually with payment of a fee due on January 1st of each year; a penalty applies to late payment.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:

Country Survey
07-31-2012
Squire Sanders (UK) LLP , London, United Kingdom  

07-25-2011
Cam Trade Marks & IP Services, Cambridge, United Kingdom
Squire Sanders (UK) LLP , London, United Kingdom  

Dependent Territories
07-25-2011
Cam Trade Marks & IP Services, Cambridge, United Kingdom
Caribbean Trademark Services, West Palm Beach, FL, USA  
Squire Sanders (UK) LLP , London, United Kingdom  

Licensing
08-06-2012
Squire Sanders (UK) LLP , London, United Kingdom  

11-02-2011
Gillhams Solicitors LLP, London, United Kingdom
Squire Sanders (UK) LLP , London, United Kingdom  


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Squire Sanders (UK) LLP


Chris McLeod
Chris McLeod
7, Devonshire Square
EC2M 4YH London
United Kingdom (UK)
Tel +44 (0)20 7655 1590
Fax +44 (0)870 458 2411
chris.mcleod@ssd.com
www.ssd.com

Squire Sanders (UK) LLP pan-European Brands group specialises in providing expert practical advice in relation to all aspects of brand protection, from brand creation through to registration to promotion, exploitation and enforcement. We act for some of the world's best known brand owners and have extensive experience in devising and implementing large scale, multi-jurisdictional strategies to combat counterfeiting and other unauthorised brand use, and have been rated in tier 1 for Brand management in the Legal 500 for the past 2 years.

Squire Sanders (UK) LLP also have one of the leading trade mark and design filing practices in the UK, with 4 fully qualified trade mark attorneys providing a complete service for trade mark and design filing. With over 50 specialist lawyers and trade mark attorneys throughout the UK and Europe, including a filing and prosecution team in London, our Brands group offers a comprehensive one stop shop for brand owners, including:

- Devising and launching a brand (including brand clearance).
- Trade mark filing and prosecution (national, international and community trade marks).
- Licensing and other exploitation strategies.
- Advertising and marketing services.
- Domain name protection.
- Enforcement against infringement of registered or unregistered rights.

Bryers

Paula Amor
7 Gay Street
BA1 2PH Bath
United Kingdom (UK)

UK Intellectual Property Office
Concept House
Cardiff Road, Newport
South Wales NP10 8QQ
Great Britain
Tel + 44 16 33 81 39 30 (Switchboard)
Fax + 44 16 33 81 77 77
www.ipo.gov.uk

European Patent Office (EPO)
Erhardtstrasse 27
80469 Munich 2
Germany
Tel + 49 89 23 99 0
Fax + 49 89 23 99 45 60
www.epo.org

Office for Harmonization in the Internal Market (OHIM)
Avenida de Europa 4
Apartado de correos 77
03008 Alicante
Spain
Tel + 34 96 51 39 10 0
Fax + 34 96 51 31 34 4
www.oami.europa.eu

World Intellectual Property Organization (WIPO/OMPI)
34, Chemin des Colombettes
1211 Geneva 20
Switzerland
Tel + 41 22 33 89 11 1
Fax + 41 22 73 35 42 8
www.wipo.int